E. Gendered Confusion
1. Certain Consumers Are Presumed to Be
Hey, whatever happened to the women’s liberation movement?
The what?
You know. The women’s movement. Why aren’t people interested anymore?
Oh, that. You see, what happened is, it became tainted.
By what?
By its close association with women.
198at 2002 WL 8859009. See generally THOMAS HINE, I WANT THAT!: HOW WE ALL
BECAME SHOPPERS (2002) (describing why people shop and how people use shopping to gain acceptance and establish their place in society).
197. The original justification for recognizing enforceable rights in trademarks was premised on the idea that trademarks could simultaneously profit both consumers and producers of goods and services. See Leaffer, supra note 19, at 5–6.
A reliable, stable, and efficiently structured trademark system benefits consumer and business interests alike. Trademarks serve the interests of consumers because they reduce search costs and allow buyers to make rational purchasing and repurchasing decisions with speed and assurance. Just as important, a strong trademark system creates incentives for firms to create and market products of desirable qualities, particularly when these qualities are not observable before purchase.
Id. (footnote omitted).
The “reasonable person” construct in tort law historically was (and
some would argue still is) masculine, both conceptually and
linguistically the “reasonable man.”
199The gender of the “reasonably
prudent consumer,”
200however, is perceptually tied to the products or
services with which disputed trademarks are associated. Where the good
or service is intuitively linked to women as primary purchasers and
consumers, a trademark holder’s burden of convincing the court that
another mark is likely to cause confusion (and is therefore infringing, or
dilutive, or possibly both) observationally seems to be an easier one to
meet in many cases.
201This watered down standard is, however, almost
199. See, e.g., Caroline Forell, Essentialism, Empathy, and the Reasonable Woman, 1994 U.ILL.L.REV. 769, 770.
Until the late 1970s the law’s measure of reasonableness was openly and exclusively male. For example, the still influential American Law Institute’s
Restatement (Second) of Torts, published in 1965, refers to the negligence standard of care as that of “thereasonable man.” While in recent years “the reasonable person”has, for the most part, replaced the reasonable man as the standard by which the law and its players measure conduct, I will show that the reasonableness standard continues to be male.
Id. (footnote omitted); see also Naomi R. Cahn, The Looseness of Legal Language: The Reasonable Woman Standard in Theory and in Practice, 77 CORNELL L.REV. 1398,
1404 (1992).
The reasonable man standard remains an entrenched and pervasive standard by which courts measure potentially illegal conduct. Tort law, criminal law, and employment discrimination law all employ this standard to determine whether conduct is appropriate. That conduct is acceptable if it is “reasonable” is one of those “neutral” principles with which everyone can agree. As one critique points out, “[t]he notion that reason is divorced from ‘merely contingent’ existence still predominates in contemporary Western thought . . . .”
The standard actually incorporates two different, although interrelated, requirements: first, that conduct be “reasonable,” and second, that conduct be that expected of a “man.” By “reasonable man,” of course, the standard purports to be universal, to include all “mankind,” and in practice courts have applied it to women as well as men.
Id. (footnotes omitted) (alterations in original).
200. This phrase has been used in several trademark cases. See, e.g.,Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1140 (9th Cir. 2002) (explaining that “[t]he test for likelihood of confusion is whether a ‘reasonably prudent consumer’ in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks”) (quoting Dreamwerks Prod. Group, Inc. v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir. 1998)); Brookfield Communications, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1060 (9th Cir. 1999).
201. Dianne Klein asserted a similar gender based analytic disparity in the context of tort law, writing:
While a first-year law student and the mother of a young son and daughter, I was constantly struck by the frequent appearance in the torts casebook of boys
always articulated in a putatively gender neutral way, so that it creates
puddles in the jurisprudence that sometimes splash and dampen
standards in trademark litigation concerning even “male” goods and
services.
The very first time a court decided to expand trademark rights such
that they could be enforced against related but noncompeting goods
(rather than just against the same or similar products) was in the context
of breakfast foods in 1917 and is still referred to as the “Aunt Jemima
Doctrine.”
202The court concluded that buyers of pancake batter would
likely become confused by the use of the same trademark on pancake
syrup and erroneously assume that the goods came from the same
source.
203“Perhaps they might not do so, if [Aunt Jemima] were used
for flatirons,”
204the court observed, signaling quite clearly that they
believed that the likely confused pancake batter and syrup purchasers
were also consumers of flatirons, which is to say, female.
205suffering injuries as the result of their own or another boy’s seeming foolhardiness. Both through their own negligence, and that of others, boys seemed continuously to find themselves in harm’s way. I naturally wondered if this phenomenon simply reflected the truth of the proverb that “boys will be boys” and, therefore, engage in more risky and dangerous play, or whether there was a more complicated relationship between boys’ exposure to risk, consequent litigation, and tort law negligence concepts.
A closer look reveals that the current understanding of “the reasonable man [or person] standard,” a central device of tort law, includes an uneasy incorporation of the economists’ notion of “risk aversion,” a deviation from ideally rational “risk neutrality,” that both reflects and reproduces structures of gender hierarchy and stereotyping. Exceptions to uniform rules regarding the standard of care reflect the same gendered understanding, including protection or even subsidy for the risk-seeking or foolhardy behavior of boys. Inefficiencies are tolerated when they support modes of behavior in which men believe themselves to have an interest. Yet the systematic risk-aversion of women, which is well-established and may have far more pervasive consequences for both the efficiency and equity goals of tort law, is not acknowledged. In domains where men are known to be risk-averse, however, reasonableness is identified with risk aversion.
Diane Klein, Distorted Reasoning: Gender, Risk-Aversion and Negligence Law, 30 SUFFOLK U.L.REV.629, 629 (1997).
202. See, e.g.,Quality Inns Int’l v. McDonald’s Corp., 695 F. Supp. 198, 211 (D. Md. 1988).
203. Aunt Jemima Mills Co. v. Rigney & Co., 247 F. 407, 409–10 (2d Cir. 1917). 204. Id. at 410.
205. Judge Learned Hand concurred in the Aunt Jemima case and then used the freshly baked “Aunt Jemima doctrine” in the context of consumers arguably more likely to be male, holding that the Yale trademark that identified the source of locks could not be used by a competitor on flashlights. Yale Elec. Corp. v. Robertson, 26 F.2d 972, 974 (2d Cir. 1928). However, he did so with little enthusiasm, writing:
[T]he fact that flash-lights and locks are made of metal does not appear to us to give them the same descriptive properties, except as the trade has so classed them. But we regard what the trade thinks as the critical consideration, and we think the statute meant to make it the test, despite the language used.
A contemporary court might be willing to overlook seemingly very
similar trademarks on virtually identical products if the packaging of the
products (the contexts in which the marks appeared) were quite
different. When Nabisco alleged that their “Cream of Wheat” cereal
mark was infringed by Quaker Oats’ use of “Creamy Wheat” on a very
similar rival foodstuff, a court concluded it was unlikely that Nabisco
would be able to demonstrate that consumer confusion was likely
because even though Nabisco and Quaker Oats were competing for the
same consumers, the differences between the product packages were
more significant than their similarities, and therefore consumers
probably would not buy Creamy Wheat believing that it was Cream of
Wheat.
206Similarly, another court concluded that consumers could
Id. He thus blamed the confusion conclusion he reluctantly endorsed on “the trade.” About the Aunt Jemima case Glynn Lunney has written:
During the course of the twentieth century, courts, and to a lesser extent Congress, gradually broadened the scope of the trademark owner’s exclusive use right. Expansion with respect to use of the mark on different goods, for example, began in 1917 when the Second Circuit ruled that the Aunt Jemima Mills Co. was entitled to exclude another from using “Aunt Jemima” as a mark on pancake syrup. Aunt Jemima had itself only used the mark with respect to self-rising flour, but the court found that the defendant’s syrup, though different, was sufficiently related “that the public, or a large part of it . . . would conclude that [the defendant’s syrup] was made by the [plaintiff].” Although the Aunt Jemima court retained confusion as to source as the relevant test, its recognition that use of the trademark on related goods could create actionable confusion opened the door to claims of infringement based upon such use. After opening the door to such claims, the Second Circuit found it almost impossible to define any sensible stopping point. If the defendant’s goods were not identical, they might nonetheless be sufficiently related that consumers would likely believe that the plaintiff had produced them. If not so related to create confusion as to source, consumers might nonetheless believe that the plaintiff had sponsored the defendant’s goods or, given the complexities of corporate ownership, that the plaintiff and defendant were somehow affiliated. In short, by opening the door to infringement claims with respect to noncompeting goods, the Second Circuit found itself on the often-invoked, but rarely encountered, slippery slope. Although no less a jurist than Learned Hand set himself the task of identifying the appropriate stopping place, the court was unable to do so. In Polaroid Corp. v Polarad Electronics Corp., the Second Circuit eventually abandoned the same goods limitation almost entirely, merely incorporating proximity of goods as a factor to be considered in resolving the likelihood of confusion issue.
Lunney, supra note 1, at 392–93 (citations omitted).
206. Nabisco Brands, Inc. v. Quaker Oats Co., 547 F. Supp. 692, 699 (D.N.J. 1982). Another decision that is very respectful of consumer intelligence and discretionary powers is BigStar Entm’t, Inc. v. Next Big Star, Inc., 105 F. Supp. 2d 185, 215–16 (S.D.N.Y. 2000).
successfully differentiate between the “Tallia” and “Italia” trademarks
even though both were associated with clothing.
207However, it is unusual for courts to presume that consumers are
observant and shrewd enough to distinguish between two disparate
cereal boxes or clothing retailers. The theory of consumer-as-idiot
prevails in many trademark infringement cases, often seeming glaringly
pretextual, invoked only to comport with the doctrinal requirements
necessary to reach the outcome that the trademark holder desires and the
court apparently endorses. Where the benchmark consumer is likely to
be perceived as female, this predisposition seems to be exacerbated.
Illustrations include determinations that consumers cannot distinguish
between the “Nailtiques” and “Pro-Techniques” marks on bottles of nail
polish,
208or between an over-the-counter drug called “Premesyn PMS,”
intended to relieve premenstrual syndrome symptoms, and a prescription
drug, “Premarin,” used in estrogen replacement therapy to treat the
symptoms of menopause.
209In this Author’s estimation, most women
can tell one brand name from another and have no difficulty whatsoever
in distinguishing between over-the-counter and prescription drugs, or
between premenstrual syndrome and menopause. Admittedly, this
Author’s opinion is experiential, intuitive, and transcendently subjective,
yet so are the vague presumptive foundations upon which judges in
trademark cases often base their legal analyses.
In a recent case in which the relevant consumers were “shoppers,” the
court upheld a jury verdict finding that the mySimon Internet-based
comparison shopping service infringed a trademark held by the Simon
Property Group, which used the name “Simon” in connection with its
real space mall development, mall management, and retail shopping
services.
210This verdict was affirmed despite the fact that the only
survey evidence in the case “tend[ed] to show virtually no threat of
actual confusion between the two companies[,] . . . . a ‘completely
negligible’ likelihood of confusion with under 2 percent of respondents
indicating relevant confusion.”
211The judge clearly felt that judicial
207. Hartz & Co. v. Italia, Inc., No. 97 Civ. 5657, 1998 WL 132787, at *2 (S.D.N.Y. Mar. 20, 1998); see also Avon Shoe Co. v. David Crystal, Inc., 171 F. Supp. 293, 313 (S.D.N.Y. 1959) (holding that Plaintiffs’ trademark was not infringed by noncompeting products in adjacent markets because there was no likelihood of confusion, defendants’ use was in good faith and reasonable, and plaintiffs were not injured).
208. Nailtiques Cosmetic Corp. v. Salon Scis. Corp., 41 U.S.P.Q.2d 1995, 1998 (S.D. Fla. 1997).
209. Am. Home Prods., Corp. v. Chattem, Inc., No. 84 Civ. 3671, 1986 WL 6167, at *5 (S.D.N.Y. May 27, 1986).
210. Simon Prop. Group, L.P. v. mySimon, Inc., No. IP 99-1195-C H/G, 2001 WL 66408 (S.D. Ind. Jan. 24, 2001).
intuition outweighed the evidence and ruled accordingly.
In another well-known case, one jeans maker, Lois Sportswear, was
enjoined from using a stitching pattern on the back pockets of the
upscale designer denim pants it marketed because the configuration was
held to be substantially similar to Levi’s trademark stitching pattern, “a
fanciful pattern of interconnected arcs.”
212The court announced that
similar back pocket stitching on defendant’s wares would confuse
consumers, despite the fact that the defendant’s jeans were designer
jeans and therefore sold to a different market segment than Levi’s jeans,
and the designer jeans bore very disparate, exceeding dissimilar labels,
hang tags, and product features.
213This conclusion was premised upon
the stated concern that an individual’s eyes might sweep the backside of
another who was wearing a pair of the defendant’s jeans, notice the back
pocket stitching design, and erroneously conclude the fanciful pattern of
interconnected arcs indicated a connection between the source of those
designer jeans with the Lois Sportswear labels and the makers of
Levi’s.
214Framed as “post-sale confusion as to source,” the court
212. Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 871 (2d Cir. 1986).
213. Id. at 877–78 (Miner, C.J., dissenting).
[T]he evidence is clear that Lois employs a variety of temporary and permanent labels distinguishing its jeans from those of Levi. For instance, Lois jeans are sold with “hang tags” displaying the Lois brand name and the trade symbol of a bull. There are two stitched-on cardboard tags, one measuring approximately five inches by three inches and the other measuring approximately one inch by three inches. Both tags display the Lois brand name and bull symbol as well as the legend “imported from Europe” in conspicuous print. Affixed permanently to Lois jeans are various identifying features: a two inch by one inch leather tag attached to the left rear pocket bearing the brand name and bull symbol; a sizing and care tag stitched to the inner waist seam bearing the Lois brand name and indicating that both the fabric and product are made in Spain; a brass button on the waistband bearing the Lois brand name; and a quarter circle leather or fabric patch, stitched to the right front pocket, bearing the bull symbol.
Id.
214. Id. at 874.
We are trying to determine if it is likely that consumers mistakenly will assume either that appellants’ jeans somehow are associated with appellee or are made by appellee. The fact that appellants’ jeans arguably are in a different market segment makes this type of confusion more likely. Certainly a consumer observing appellee’s striking stitching pattern on appellants’ designer jeans might assume that appellee had chosen to enter that market segment using a subsidiary corporation, or that appellee had allowed appellants’ designers to use appellee’s trademark as a means of reaping some profits from the designer jeans fad without a full commitment to that market
assumed this allegedly anticipated harm was of adequate magnitude to
support injunctive relief.
215The court’s qualitative view of the
purchasers of the defendants’ designer jeans can be surmised from the
following: While the text of the opinion states that “[t]he district court
found, and the parties do not dispute, that the typical buyer of ‘designer’
jeans is sophisticated with respect to jeans buying,”
216an appended
footnote acerbically notes that: “[i]t is quite possible of course to draw
the opposite inference from the fact that these buyers are willing to pay
almost $100 for a pair of jeans.”
217On occasion, adult shoppers are explicitly presumed to be less
perceptive and discerning then their young children. One of the most
startling cases in this regard involved fish shaped snack crackers.
218segment. Likewise, in the post-sale context a consumer seeing appellants’ jeans on a passer-by might think that the jeans were appellee’s long-awaited entry into the designer jeans market segment. Motivated by this mistaken notion—appellee’s goodwill—the consumer might then buy appellants’ jeans even after discovering his error. After all, the way the jeans look is a primary consideration to most designer jeans buyers.
Id.
215. Id. at 871.
We agree with the district court, however, that the two principle areas of confusion raised by appellants’ use of appellee’s stitching pattern are: (1) the likelihood that jeans consumers will be confused as to the relationship between appellants and appellee; and (2) the likelihood that consumers will be confused as to the source of appellants’ jeans when the jeans are observed in the post- sale context. We hold that the Lanham Act, 15 U.S.C. §§ 1051–1127 (1982), as interpreted by our Court, was meant to prevent such likely confusion.
Id.
216. Id. at 875. 217. Id. at 875 n.5.
218. Nabisco, Inc. v. PF Brands, Inc., 191 F.3d 208, 213 (2d Cir. 1999). In spring 1998, Nickelodeon Television Network approached Nabisco to explore a possible joint promotion for Nickelodeon’s new cartoon program, “CatDog.” In August 1998, Nabisco and Nickelodeon entered a Joint Promotion Agreement (“JPA”), giving Nabisco the right to produce cheese crackers in shapes based on the CatDog cartoon. The agreement required Nabisco to print on its packages that “CatDog and related titles, logos and characters are trademarks of” Nickelodeon’s parent, Viacom International, Inc. Nabisco’s CatDog product was intended to compete with other animal-shaped cheese crackers marketed to children.
The star of the CatDog cartoon program is the CatDog—a two-headed creature that is half cat and half dog. Each half of the CatDog has a distinct